Trademarks

It is a common occurrence that most owners choose a mark that describes their product in order to increase the likelihood that the customer associates the mark with product, but unfortunately registration of such marks would not be permitted. The focus must be on just the opposite, to choose a mark that has absolutely no connection to the product or service provided. The best trademarks do not in anyway describe the product or service it represents. A consultant knowledgeably can direct a client through a series of steps to arrive at the right choice of a mark for his business product or service.

A trademark is more than just a brand name under which a business operates. It is an assurance to the consumer of the quality of the product or service that they are purchasing and unreservedly implies that the company will keep its products or services relevant to a changing marketplace. A trademark increases the sales of a company’s product or services. For any company, brand equity is a durable source of cash flow, lower cost of sales, lower cost of capital and higher market valuation. Therefore the choice of the right trademark is a critical to a business undertaking, one that requires long hours, time and effort to be invested, but more importantly, it requires sound knowledge of which attributes constitute an ideal mark. At this stage it is important to consult for advice on choosing the right mark.

Apart from descriptiveness of the mark, decisions must be taken to choose a mark that does not infringe another’s trademark. It is not sufficient that the chosen mark is not identical to the exiting trademark, but it also must not in any way confuse the consumer as to the source of the product or service. Therefore, the mark chosen must be unique and indistinguishable from existing marks used in commerce for the same or similar product or service. The key factor to take into consideration here is, if the chosen mark is similar or confusingly similar to an existing trademark. In such a situation, a completely different mark need not be selected, but instead the chosen mark may be modified to remove the comparable elements. A consultant could offer invaluable assistance in this regard.

Registration of the chosen trademark with the national trademark office is the most important step in protecting the mark. Registration gives the owner of the mark exclusive rights to use, distribute, license and sell the mark. The process of registration at the U.S.PTO includes filing of the trademark application, choosing the classes of goods and services the mark is associated with, filing an image of the mark and filing a specimen of the product showing the mark in use in commerce. A consultant is equipped to file this application with all supplementary documents without much assistance from the owner of the mark.

Once the mark is registered with the national trademark office, the mark needs to be maintained. The term of the trademark registration is 10 years and the mark will need to be renewed after the expiry of the 10 year period. Affidavits and declarations of continued use of the mark will need to be filed with the trademark office after 5 years of the registration. A consultant keeps track of the payments to be made and forms required to be filed post registration of the mark and files the appropriate documents within the deadlines to ensure that the trademark remains exclusively the intellectual property of the owner.

A trademark application may also be filed internationally under the Madrid Protocol for the designated countries of one’s choice or through individual trademark applications in the countries of choice. A consultant can file an international trademark application under the Madrid Protocol if the client is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the United States. The application requirements are similar to that of a national trademark application.